Sonova AG

Patent Trials and Appeals Board

Jun 2, 2021

IPR2020-00176 (P.T.A.B. Jun. 2, 2021)

Trials@uspto.gov Paper 38
571-272-7822 Date: June 2, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MED-EL ELEKTROMEDIZINISCHE GERÄTE GES.M.B.H.,
Petitioner,
v.
SONOVA AG,
Patent Owner.

IPR2020-00176
Patent 6,761,681 B2

Before PATRICK R. SCANLON, ERIC C. JESCHKE, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)
Dismissing Petitioner’s Motion to Exclude
37 C.F.R. § 42.64

IPR2020-00176
Patent 6,761,681 B2

2
INTRODUCTION
MED-EL Elektromedizinische Geräte Ges.m.b.H. (“Petitioner”) filed
a Petition (Paper 1, “Pet.”) requesting institution of an inter partes review of
claims 6–9, 11, and 12 of U.S. Patent No. 6,761,681 B2 (Ex. 1001, “the ’681
patent”). Sonova AG (“Patent Owner”) filed a Preliminary Response.
Paper 7 (“Prelim. Resp.”). With our authorization (see Paper 9), Petitioner
filed a Reply (Paper 10), to which Patent Owner filed a Sur-reply (Paper 12).
Pursuant to 35 U.S.C. § 314, we instituted an inter partes review of claims
6–9, 11, and 12 of the ’681 patent on all presented challenges. Paper 13
(“Inst. Dec.”).
After institution, Patent Owner filed a Response (Paper 18, “PO
Resp.”), Petitioner filed a Reply (Paper 23, “Pet. Reply”), and Patent Owner
filed a Sur-reply (Paper 26, “PO Sur-reply”). In addition, Petitioner filed a
Motion to Exclude (Paper 30), Patent Owner filed an Opposition to that
Motion (Paper 31), and Petitioner filed a Reply (Paper 32). An oral hearing
in this proceeding was held on March 8, 2021, and a transcript of the hearing
is included in the record (Paper 37, “Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) (2018) and 37 C.F.R.
§ 42.73 (2019). For the reasons that follow, we determine that Petitioner has
shown by a preponderance of the evidence that 6–9, 11, and 12 of the ’681
patent are unpatentable.
BACKGROUND
A. Real Parties in Interest
Petitioner states that its real parties in interest are itself and its
subsidiary MED-EL Corporation, USA. Pet. 6. Patent Owner states that its
IPR2020-00176
Patent 6,761,681 B2

3
real parties in interest are itself, Advanced Bionics AG, and Advanced
Bionics, LLC. Paper 8, 2.
B. Related Matters
The parties identify several related proceedings pursuant to 37 C.F.R.
§ 42.8(b)(2): (1) MED-EL Elektromedizinische Geräte Ges.m.b.H. and
MED-EL Corporation, USA v. Advanced Bionics, L.L.C., 1:18-cv-01530 (D.
Del.) (filed October 3, 2018) (“Delaware Litigation”); (2) IPR2019-01469
(petition filed by Patent Owner’s real party in interest Advanced Bionics,
LLC related to a patent that “Petitioner purports to own and has asserted in
the Delaware Litigation”); (3) IPR2019-01572 (petition filed by Patent
Owner’s real party in interest Advanced Bionics, LLC related to a patent that
“Petitioner purports to own and has asserted in the Delaware Litigation”);
and (4) IPR2020-00190 (petition filed by Petitioner related to a patent
owned by Patent Owner’s real party in interest Advanced Bionics AG,
which has been asserted in the Delaware Litigation). Pet. 4–5; Paper 8, 2–3.
C. The ’681 Patent
The ’681 patent issued on July 13, 2004, from an application filed on
August 14, 2001. Ex. 1001, codes (22), (45). The ’681 patent relates to a
“percutaneous or transcutaneous connecting device, featuring at least one
passage or a passage-free connection through . . . the skin.” Id. at code (57).
“Percutaneous access ports extend in physical, mechanical fashion through
the skin,” while “[t]ranscutaneous access does not usually involve access
hardware but often employs the induction principle, creating an electrical
connection between the inside of the body and its external surroundings.”
Id. at 1:16–22. According to the ’681 patent, “[i]t is therefore an objective
of this invention to provide a percutaneous or transcutaneous connection
IPR2020-00176
Patent 6,761,681 B2

4
with the body of a living being and especially of a human which avoids”
drawbacks such as complex designs that are awkward to use and not user
friendly. Id. at 1:52–55. The ’681 patent describes the use of internal and
external parts that use elongated magnets to provide the necessary coupling
pressure and to align the access ports, which allows the use of the invention
with “greater ease.” Id. at 1:58–65.
Figures 1A and 1B of the ’681 patent are reproduced below.

Figures 1A and 1B are “longitudinal section” views of “a
percutaneous connection with two separate passages.” Ex. 1001, 2:15–16.
Figure 1A depicts external plug-in part 15 having permanent magnet 17, two
ports 21, connecting openings 23 on each end of ports 21, and intake/exit
conduit 19. Id. at 2:40–46. Figure 1B depicts internal part 5 having
“permanent magnet 7 positioned beneath the epidermis 1,” and two passages
9 with flared openings 11. Id. at 2:26–34. Connecting openings 23 on
IPR2020-00176
Patent 6,761,681 B2

5
external part 15 face and plug into flared openings 11 on internal part 5. Id.
at 2:45–48. The Figures show the magnetic poles marked “N” and “S” on
each of magnets 7, 17 extending in a direction generally parallel to
epidermis 1. Id. at 2:29–30, 2:41–42. The conduits within both parts are
“designed as to permit the introduction of substances such as medication,
nutrients and the like, as well as the withdrawal of fluids from inside the
body.” Id. at 2:53–56.
In addition to the percutaneous embodiment described above, the ’681
patent discloses a transcutaneous embodiment in Figure 3, near a user’s ear
31. Ex. 1001, 2:20–21, Fig. 3. The transcutaneous embodiment includes
implanted part 25 having coil 27 that can receive or send electrical signals or
transfer electrical energy. Id. at 3:19–21. Implanted part 25 also includes
permanent magnet 29, “which serves to align and to retain in place an
external part in relation to the implanted part.” Id. at 3:22–24. “Both the
coil 27 and the permanent magnet 29 are implanted underneath the skin and
are not visible from the outside,” such that, “in contrast to percutaneous
connections, there is no physical, mechanical passage from inside the body
to the outside or from the outside to the inside of the patient.” Id. at 3:26–
31.
D. Challenged Claims
Petitioner challenges claims 6–9, 11, and 12. Pet. 7. Of those claims,
claims 6, 8, 9, and 12 are independent. Ex. 1001, 4:32–6:4. Claim 6 is
reproduced below.
6. A percutaneous or transcutaneous connecting device for
providing a connection through an outer surface of a living being
characterized by a permanent magnet (7, 29) adapted to be
positioned in the area of the outer surface (1,3) with its poles
extending essentially parallel thereto, and at least one inductive,
IPR2020-00176
Patent 6,761,681 B2

6
capacitive or other passage-free connection adapted to be
between inside and outside of the body of a wearer.
Id. at 4:32–39.
E. Evidence and Asserted Grounds
Petitioner asserts that claims 6–9, 11, and 12 are unpatentable on the
following grounds:
Claim(s)
Challenged 35 U.S.C. § Reference(s)/Basis
6–9, 11 103(a) Dormer,1 Goldberg2
12 103(a) Dormer, Goldberg, Ely3
9 102(b) Hooven4
Petitioner also relies on the Declarations of David L. Trumper, Ph.D.
Exs. 1002, 1018. Patent Owner relies on the Declaration of Darrin J. Young,
Ph.D. Ex. 2014.
ANALYSIS
A. Legal Standards
To prevail in its challenges, Petitioner must prove unpatentability by a
preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
“In an [inter partes review], the petitioner has the burden from the onset to
show with particularity why the patent it challenges is unpatentable.”
Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
(citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to
identify “with particularity . . . the evidence that supports the grounds for the

1 US 4,352,960, issued October 5, 1982 (“Dormer”) (Ex. 1003).
2 US 3,766,928, issued October 23, 1973 (“Goldberg”) (Ex. 1004).
3 US 3,749,853, issued July 31, 1973 (“Ely”) (Ex. 1006).
4 US 4,676,772, issued June 30, 1987 (“Hooven”) (Ex. 1005).
IPR2020-00176
Patent 6,761,681 B2

7
challenge to each claim”)). This burden of persuasion never shifts to Patent
Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d
1375, 1378 (Fed. Cir. 2015) (discussing the burdens of proof in an inter
partes review).
Petitioner relies on obviousness in its challenges to the claims that we
address below. A claim is unpatentable as obvious under 35 U.S.C. § 103(a)
if the differences between the claimed subject matter and the prior art are
such that the subject matter, as a whole, would have been obvious at the time
the invention was made to a person having ordinary skill in the art to which
said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
406 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations, including: (1) the scope and content of
the prior art; (2) any differences between the claimed subject matter and the
prior art; (3) the level of skill in the art; and (4) when in evidence, so-called
secondary considerations. Graham v. John Deere Co. of Kansas City, 383
U.S. 1, 17–18 (1966).
B. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001). “The person of ordinary skill in the art is a
hypothetical person who is presumed to know the relevant prior art” at the
time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed.
Cir. 1995). Factors that may be considered in determining the level of
ordinary skill in the art include, but are not limited to, the types of problems
encountered in the art, the sophistication of the technology, and educational
IPR2020-00176
Patent 6,761,681 B2

8
level of active workers in the field. Id. In a given case, one or more factors
may predominate. Id.
Petitioner contends that a person having ordinary skill in the art would
have had “the equivalent of a Bachelor of Science degree in electrical
engineering, mechanical engineering or physics or a related discipline with
course work in electromagnetics, and two years’ experience designing or
developing electromagnetic devices.” Pet. 17–18 (citing Ex. 1002 ¶ 24).
Patent Owner states that “[f]or the purposes of this IPR only, Patent Owner
does not dispute MED-EL’s POSA definition.” PO Resp. 23.
We adopt Petitioner’s asserted level of ordinary skill because it is
consistent with the problems addressed by the ’681 patent and the prior art
of record.
C. Claim Construction
In inter partes reviews, we interpret claims in the same manner used
in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b); Phillips v.
AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (setting forth claim
construction approach in district court cases). Under that standard, we
generally give claim terms their ordinary and customary meaning, as would
be understood by a person of ordinary skill in the art at the time of the
invention, in light of the language of the claims, the specification, and the
prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic
evidence, when available, may also be useful when construing claim terms
under this standard, extrinsic evidence is generally “less reliable” than the
intrinsic record. See id. at 1318–19. Only terms that are in controversy need
to be construed, and then only to the extent necessary to resolve the
IPR2020-00176
Patent 6,761,681 B2

9
controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868
F.3d 1013, 1017 (Fed. Cir. 2017).
Petitioner proposes constructions for several claim terms. First,
Petitioner argues that “in the area of the outer surface” (in claims 6, 8, and 9)
means “near the skin or the bone adjacent the skin.” Pet. 18–19. Patent
Owner does not dispute Petitioner’s proposed construction. See PO Resp.
23–30. Petitioner’s proposed construction is supported by the record, and
we apply it in this Decision.
Second, Petitioner argues that “at least one conduit” (in claim 12)
“should receive its ordinary meaning, namely, ‘a pipe, tube, or the like, for
conveying water or other fluid.’” Pet. 21–23. Patent Owner opposed
Petitioner’s proposal in its Preliminary Response, but does not oppose the
construction, or argue that the prior art fails to disclose this limitation in
claim 12, in its Patent Owner Response. See Prelim. Resp. 21–22; PO Resp.
23–30, 58 (arguing that Petitioner’s Ground 2 challenging claim 12 does not
cure the deficiencies Patent Owner alleges with respect to Ground 1). In our
Institution Decision, we noted that we were not persuaded that the term
requires construction, and invited the parties to address the issue further
during trial if necessary. Inst. Dec. 29–31. Neither party addresses this
claim construction issue or the application of the term to the prior art in its
post-institution briefing. PO Resp. 23–30, 58; Pet. Reply 22–30; PO Sur-
reply 1–22. We decline to construe the limitation because no issue in this
proceeding turns on its construction. We apply the ordinary meaning to the
term “at least one conduit.”
Third, Petitioner argues that “inductive, capacitive or other passage-
free connection adapted to be between inside and outside of the body of a
IPR2020-00176
Patent 6,761,681 B2

10
wearer” (in claim 6) means “a paired relationship between an implanted
element interacting via energy with an external element without a physical
passage between the inside and outside of the body.” Pet. 19–21. Patent
Owner argues that Petitioner’s proposal improperly refers to “via energy”
such that it encompasses magnetic connections. PO Resp. 23. Patent Owner
contends that the phrase means a “connection via electrical or
electromagnetic signals and/or electrical energy that takes place without
physical passages.” Id. (citing Ex. 2014 ¶ 76). Patent Owner does not argue
that Petitioner’s proposed combination of Dormer and Goldberg fails to
disclose this limitation, and appears to rely on its construction as part of its
no motivation to combine argument. See id. at 31–33, 53 n.5. We need not
resolve the parties’ dispute over the construction of this limitation because,
even if we apply Patent Owner’s proposal, we would still find the challenged
claims unpatentable. We apply Patent Owner’s construction in our analysis
below.
Fourth, Patent Owner argues that we should construe the preamble of
claim 9 as limiting, and that “transcutaneous or percutaneous” withdrawal in
the preamble requires passage across the skin surface. PO Resp. 25–30.
Petitioner does not dispute that the preamble to claim 9 limits the claim, but
argues that Patent Owner’s construction improperly reads “transcutaneous”
out of the claim because transcutaneous does not encompass withdrawal
across the skin. See Pet. 31 (“This preamble requires any of three
alternatives.”), 50–51 (asserting that Hooven discloses the requirements of
the preamble); Pet. Reply 23–26. Because the parties appear to agree that
the preamble limits claim 9, we treat the preamble as limiting in our analysis
below. We need not resolve the parties’ further disputes because they only
IPR2020-00176
Patent 6,761,681 B2

11
arise in the context of Petitioner’s third ground based on Hooven, which we
do not reach because we find claim 9 unpatentable based on Dormer and
Goldberg, for the reasons provide below. See Pet. 50–53; PO Resp. 59–60;
Pet. Reply 23–26. As to application of the preamble of claim 9 to Dormer
and Goldberg, Petitioner provides persuasive and undisputed argument and
evidence that Dormer discloses the requirements of the preamble under any
reasonable construction. See Pet. 31 (relying on Dormer’s transfer of
electrical energy via coils as disclosing preamble limitations); PO Resp. 30–
33.
D. Obviousness of Claims 6–9 and 11 Based on Dormer and Goldberg
Petitioner challenges claims 6–9 and 11 under 35 U.S.C. § 103 based
on Dormer and Goldberg. Pet. 24–28. For these challenges, Petitioner cites
to the asserted references and the Trumper Declaration. Id. We first provide
an overview of Dormer and Goldberg, and then address the parties’
arguments and evidence.
1. Overview of Dormer
Dormer relates to “a bio-electronic signal coupling device (such as a
hearing aid having a cochlear implant unit and a sound receiving unit)
utilizing rare-earth magnets to properly align and secure an external member
(such as the sound receiving unit) with an internal member (such as the
cochlear implant unit).” Ex. 1003, 1:10–16. Dormer states that “it is
desirable that there be no mechanical connection which extends through the
skin of the user between the internal and external units.” Id. at 1:66–2:1.
Dormer discloses a “transcutaneous coupling apparatus” having magnets
associated with a first member under the skin and a second member just
IPR2020-00176
Patent 6,761,681 B2

12
outside a user’s skin in order to magnetically secure the members. Id. at
2:33–38, 2:68–3:8. Dormer’s Figure 1 is reproduced below.

Figure 1 “is a schematic illustration and block diagram of a preferred
embodiment of the present invention.” Ex. 1003, 3:29–30. Figure 1 depicts
hearing aid 2 having internal first member 4 shown as internal coil assembly
6, which in the preferred embodiment is a cochlear implant unit including an
electronic receiver. Id. at 3:55–59. “[I]nternal coil assembly 6 is
subcutaneously located beneath a layer of tissue 8[,] which includes the
epidermal and dermal layers of the skin.” Id. at 3:65–67. Figure 1 also
depicts second member 22, which includes signal generating and
transmitting means 24, which in turn includes “sound detector and signal
conditioner means 26 and an external coil assembly 28.” Id. at 4:16–22.
Signal conditioner means 26 includes microphone 30, which detects sound
and converts it into an electrical signal that is then amplified and modulated
before “electromagnetic transmission transcutaneously through the
intervening tissue 8.” Id. at 4:38–53, Fig. 4.
Dormer discloses several embodiments for magnetically coupling the
internal and external members. In the first embodiment, magnet 38 in the
IPR2020-00176
Patent 6,761,681 B2

13
middle of pot-type core-half 20 of the internal member and a similar magnet
in the external member couple the two members together. Ex. 1003, 5:8–13,
5:21–27, Fig. 2. In that embodiment, “[t]he magnetic coupling arises by
placing attractive poles of the first and second magnets toward each other so
that the magnetic lines of force extend through the intervening tissue 8 to
retain the internal and external coil assemblies in alignment adjacent the
intervening skin.” Id. at 5:27–32. In a second embodiment, two separate
magnets 44, 46 are disposed in each of the first and second members. Id. at
6:32–47, Fig. 5. According to Dormer, with this configuration,
“misalignment is less likely to occur once the first and second members are
magnetically coupled” and “a single, predetermined alignment” can be
achieved through the selection of polarities in each of the magnets. Id. at
6:48–53, 7:1–21. In addition to these two embodiments, Dormer states that
“a ring magnet disposed along the periphery of the pot-type core-half could
be used.” Id. at 7:35–36.
2. Overview of Goldberg
Goldberg discloses a pacemaker having “a pacer rate adjustment
mechanism which utilizes magnetic coupling.” Ex. 1004, code (57).
Goldberg’s mechanism enables a user to adjust the “rate-controlling
potentiometer” in the device from outside the patient. Id. Potentiometer 16
includes a shaft that, when turned, controls the pacer rate. Id. at 3:20–24.
Goldberg discloses the potentiometer’s shaft is coupled to magnet 30 within
housing 20, such that rotation of magnet 30 adjusts the pacer rate. Id. at
3:22–26. Magnet 30 “is in the form of a disc with a central hole, and it is
magnetized diametrically,” i.e., “the north and south poles of the magnet are
at opposite ends of one of its diameters.” Id. at 3:38–42, Fig. 2.
IPR2020-00176
Patent 6,761,681 B2

14
Goldberg discloses two methods of rotating shaft 30 and in turn
modifying the pacer rate. In the first embodiment, a user can rotate magnet
30 by placing an external magnet, larger than magnet 30, “on the patient’s
skin in the vicinity of the pacer and then rotating it.” Id. at 4:15–18; see also
id. at Fig. 1 (showing pacer unit, including housing 20 that encloses magnet
30, for use in first embodiment), Fig. 2 (showing diametrically magnetized
magnet 30). The poles of the rectangular external magnet are at opposite
ends of its longest dimension. Id. at 4:10–13. In the second embodiment,
Goldberg employs a second diametrically magnetized disc magnet 52
disposed just outside housing 20, with the north and south poles of magnets
30, 52 “disposed adjacent to each other” so that “[i]f magnet 52 is turned,
magnet 30 turns with it.” Id. at 4:51–53, 4:63–67, Figs. 4–5. Goldberg’s
Figure 5 is reproduced below.

Figure 5 “depicts the face-to-face relationship of the two diametrically
magnetized disc magnets.” Ex. 1004, 2:64–66. In the embodiment that
corresponds to Figure 5, both magnets are disposed under a patient’s skin
and are turned by inserting a needle through the patient’s skin and into axial
IPR2020-00176
Patent 6,761,681 B2

15
bore 56a “so that when the needle is turned the disc and the embedded
magnet [52] turn with it.” Id. at 4:53–56.
3. Discussion
Petitioner asserts that the combination of Dormer and Goldberg
discloses all limitations of claims 6–9 and 11. Pet. 24–35. Petitioner
provides analysis of each limitation in the claims, with citations to the
references that correspond to each of the claim limitations. Id. Petitioner
also cites to the relevant declarant testimony. See id. (citing various portions
of Ex. 1002). Petitioner asserts that Dormer discloses all of the limitations
of the claims with the exception of the orientation of the poles of the magnet
“extending essentially parallel” to the outer surface of a living being, and
relies on Goldberg for that limitation. See id. at 24 (citing Ex. 1002 ¶ 63).
Patent Owner argues that neither Dormer nor Goldberg discloses the
limitation found in each challenged claim requiring a device having a
permanent magnet “with poles extending essentially parallel to the skin.”
PO Resp. 30–33. Patent Owner also argues that it would not have been
obvious to modify Dormer’s magnets in the manner Petitioner proposes. Id.
at 34–58.
We first address whether the combination of Dormer and Goldberg
discloses all of the limitations of claims 6–9 and 11. We then address the
motivation to combine the references.
a. Disclosure of the Claim Limitations
1) Undisputed Limitations
Petitioner contends that the Dormer discloses nearly all of the
limitations of claims 6–9 and 11. Pet. 24–35. For example, with respect to
claim 6, Petitioner asserts that Dormer discloses a “transcutaneous coupling
IPR2020-00176
Patent 6,761,681 B2

16
device” with internal and external units allowing transfer of electrical signals
via electromagnetic induction that satisfies the requirements of the preamble.
Pet. 24–25 (citing Ex. 1003, code (57), 1:29–34, 2:63–66; citing Ex. 1002
¶ 64). As to the claimed “permanent magnet (7, 29) adapted to be positioned
in the area of the outer surface (1,3),” Petitioner argues that Dormer
discloses magnets just above and below the surface of the skin of a patient.
Pet. 25 (citing Ex. 1003, 2:69–3:5, 7:29–36). Petitioner also argues that the
pot-type core-half Dormer employs was widely known in the industry, with
the magnets located in the central portion as shown in Dormer’s Figures 2
and 5 “or about the periphery of the core-half as suggested for a ring
magnet.” Id. at 25–26 (citing Ex. 1002 ¶¶ 65–66; Ex. 1012; Ex. 1014, 1:10–
11). As to claim 6’s final limitation requiring “at least one inductive,
capacitive or other passage-free connection adapted to be between inside and
outside of the body of a wearer,” Petitioner argues that Dormer discloses
electromagnetically inductive transmission between the coils in the internal
and external parts. Pet. 27–28 (citing Ex. 1002 ¶ 64; Ex. 1003, 3:65–4:4,
4:23–24, 4:58, 5:26–27).
With the exception of the limitation in each independent claim
requiring a magnet having “poles extending essentially parallel” to the outer
surface, Patent Owner does not address or dispute Petitioner’s arguments
and evidence. PO Resp. 30–33. We have reviewed Petitioner’s arguments
and evidence as to the undisputed limitations of claim 6, as well as the
undisputed limitations of claims 7–9 and 11. See Pet. 24–35. Petitioner
IPR2020-00176
Patent 6,761,681 B2

17
establishes sufficiently that the combination of Dormer and Goldberg
discloses each of these undisputed limitations. See id.5
2) Magnet Having Poles Extending Essentially Parallel
to the Outer Surface
As to the limitation in independent claims 6, 8, and 9 requiring a
magnet having “poles extending essentially parallel” to the outer surface,
i.e., the skin, Petitioner argues that Dormer suggests use of a ring magnet
along the periphery of a pot-type core-half and Goldberg discloses magnets
that are magnetized diametrically. Pet. 26 (citing Ex. 1003, 7:35–36; Ex.
1004, 2:63–65, 3:39–42, Figs. 2, 5). Petitioner argues that when
implementing the diametrically magnetized ring magnets shown in Figure 5
of Goldberg on Dormer’s connecting device, the magnets are attracted to
one another, and will sandwich the skin tissue between the magnets as in
Dormer, so that they are parallel to one another and the skin surface. Id. at
27 (citing Ex. 1002 ¶ 67). Petitioner’s annotated version of Dormer’s Figure
1 is reproduced below.

5 We need not set forth formal findings as to the undisputed assertions by
Petitioner that the references disclose these limitations of claims 6–9 and 11.
See In re NuVasive, Inc., 841 F.3d 966, 974 (Fed. Cir. 2016) (“Although the
Board did not make findings as to whether any of the other claim limitations
(such as fusion apertures or anti-migration teeth) are disclosed in the prior
art, it did not have to: NuVasive did not present arguments about those
limitations to the Board. . . . The Board, having found the only disputed
limitations together in one reference, was not required to address undisputed
matters.”); Paper 14, 8 (emphasizing that “any arguments not raised in the
response may be deemed waived”).
IPR2020-00176
Patent 6,761,681 B2

18

The annotated figure depicts Petitioner’s proposed placement of
diametrically magnetized magnets next to tissue 8 in Dormer’s arrangement,
with the ring magnets surrounding external coil assembly 28 and internal
coil assembly 6. Pet. 27. Petitioner contends that such placement of the ring
magnets results in the north and south poles of the magnets extending
essentially parallel to the skin. Id. (citing Ex. 1002 ¶ 67).
Patent Owner argues that Dormer’s axially magnetized magnets
include “poles perpendicular to the skin” rather than parallel, and “Goldberg
says nothing about the orientation of the magnet’s poles relative to the skin.”
PO Resp. 31 (emphasis omitted) (citing Pet. 26; Ex. 2014 ¶ 91). Patent
Owner also argues that Dormer fails to depict the orientation of its ring
magnet embodiment that Petitioner relies upon in its challenge. Id. at 32–33
(citing Ex. 1003, 7:35–36, Fig. 1; Ex. 2014 ¶¶ 92–93).
Petitioner replies that use of the diametric magnetization of
Goldberg’s magnets in Dormer’s ring magnet embodiment results in “poles
extending essentially parallel” to the skin, and that Patent Owner’s declarant
recognized this result. Pet. Reply 10–11 (citing Ex. 1017, 57:20–58:1; Ex.
2014 ¶ 59). Petitioner also argues that Patent Owner improperly attacks the
IPR2020-00176
Patent 6,761,681 B2

19
references individually rather than Petitioner’s combination of references.
Id. at 11–12 (citing PO Resp. 31).
Patent Owner responds that it not only argues that the references each
fail to disclose the poles extending essentially parallel to the skin, but that
the combination also fails to disclose the limitation. PO Sur-reply 2–3.
Patent Owner also argues Petitioner fails to support its argument that
Dormer’s axial magnets are arranged with their poles perpendicular to the
skin, and therefore Dormer’s ring magnet’s poles would be arranged with its
poles parallel to the skin. Id. at 3 (citing Pet. Reply 11). Patent Owner
contends that Petitioner’s declarant testimony does not support Petitioner’s
position and that Dormer’s ring magnet embodiment does not provide
adequate guidance. Id. at 3–4 (citing Ex. 1017, 56:24–57:19; Ex. 2014
¶ 92).
We agree with Petitioner that its proposed combination of Dormer and
Goldberg discloses a magnet with “poles extending essentially parallel” to
the outer surface, i.e., the skin. See Pet. 26–27; Ex. 1002 ¶ 67; Ex. 1003,
7:35–36; Ex. 1004, 2:63–65, 3:39–42, Figs. 2, 5. Dormer discloses a ring
magnet and Goldberg discloses two diametrically magnetized disc magnets,
with the north and south poles on opposite ends. See Ex. 1003, 7:35–36; Ex.
1004, 2:63–65, 3:39–42, Fig. 5. Once the diametrical magnetization is
applied to Dormer’s ring magnets and the magnets placed on either side of
the skin as Petitioner proposes, the north and south poles extend essentially
parallel to the skin surface as the limitations requires. Pet. 27.
Patent Owner’s arguments do not persuade us that Petitioner fails to
make an adequate showing here. See PO Resp. 31–33. As Petitioner
correctly notes, Patent Owner’s argument that neither Dormer nor Goldberg
IPR2020-00176
Patent 6,761,681 B2

20
alone discloses the limitation improperly focuses on the references
individually rather than Petitioner’s proposed combination. See Pet. Reply
11–12 (citing Bradium Techs. LLC v. Iancu, 923 F.3d 1032 (Fed. Cir. 2019);
In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Similarly, Patent Owner’s
focus on non-ring magnet embodiments in Dormer that Petitioner does not
rely upon does not address Petitioner’s proposed combination. Patent
Owner also argues that the combination fails to disclose the limitation, but
Patent Owner never argues that Petitioner’s proposed combination, as shown
in the annotated figure above, fails to disclose magnets with poles extending
parallel to the skin. See Pet. 27; PO Resp. 32–33. Instead, Patent Owner
appears to argue Petitioner makes incorrect assumptions as the basis for its
modification of Dormer. PO Resp. 32–33. While such arguments may go to
the motivation or justification for the proposed modification, they do not
undermine Petitioner’s position that the resulting combination, if made as
Petitioner proposes, discloses the limitation.6
Based on the foregoing analysis of the disputed and undisputed
limitations, we find that Petitioner establishes by a preponderance of the
evidence that the combination of Dormer and Goldberg discloses all of the
limitations of claims 6–9 and 11.

6 Although Patent Owner’s arguments do not support directly its assertion
that the resulting combination fails to disclose any limitations, we also
disagree with Patent Owner’s argument that Petitioner cites no support as a
basis for its proposed modification of Dormer. Petitioner cites (1) the
references themselves; (2) credible declarant support; and (3) the deposition
testimony of Patent Owner’s declarant that Dormer discloses magnets with
the pot core parallel to the skin, suggesting that its ring magnet embodiment
would be arranged in the same manner. Pet. 26–27 (citing Ex. 1002 ¶ 67;
Ex. 1003, 7:35–36; Ex. 1004, 2:63–65, 3:39–42, Figs. 2, 5); Pet. Reply 10–
11 (citing Ex. 1017, 57:20–58:1; Ex. 2014 ¶ 59).
IPR2020-00176
Patent 6,761,681 B2

21
b. The Proposed Combination
1) The Parties’ Positions
Petitioner argues that both Dormer and Goldberg disclose implantable
devices that employ magnetic coupling, “fall within the field of
transcutaneous connecting devices as identified in the preamble of the ’681
patent claims,” and “both references concern magnetic devices and
implantable devices.” Pet. 35 (citing Ex. 1003, 1:7–9). Petitioner contends
that Dormer discloses all aspects of claims 6–9 and 11 with the exception of
whether to orient the poles parallel or perpendicular to the skin, which were
well known approaches in the art. Id. at 36 (citing Ex. 1002 ¶ 76; Ex. 1010,
227). Petitioner supports its position with reference to a magnet design
handbook by Moskowitz8 that discloses the poles running parallel to the
thickness of a ring magnet (axial magnetization) or parallel to the diameter
(diametric magnetization). See id.; Ex. 1010, 22. Petitioner notes that a
“horseshoe magnetization could have been considered” as well, but the
simplest configurations Moskowitz discloses would be sufficient to hold one
magnet to another. Pet. 36. Petitioner contends that implementing
Goldberg’s diametrically magnetized magnets, with the poles lined up
parallel to the skin, “would have been one of just a finite number of practical
predictable orientations.” Id. at 37 (citing Ex. 1002 ¶ 77). Petitioner also
argues that the proposed combination merely involves prior art elements
“arranged according to known methods to yield predictable results” by

7 Petitioner cites to page 25 of Exhibit 1010, but we view that as a
typographical error as the image cited appears on page 22 of Exhibit 1010.
See Ex. 1010, 22.
8 Moskowitz, Lester R., et al., Permanent Magnet Design and Application
Handbook (1976) (Ex. 1010, “Moskowitz”).
IPR2020-00176
Patent 6,761,681 B2

22
relying on known “parallel magnetization.” Id. at 38 (citing Ex. 1002 ¶¶ 38,
78–80; Ex. 1010, 155; Exs. 1012, 1013).
Petitioner further argues that Dormer provides motivation for
diametric magnetization by teaching the use of multiple, oppositely-
polarized magnets on each of the internal and external parts to achieve
proper predetermined alignment of the parts, and that approach would lead
to the diametrically magnetized approach if applied to Dormer’s ring
magnet. Id. at 39–41 (citing Ex. 1002 ¶¶ 40–41, 81–82; Ex. 1003, 5:21–44,
7:1–29, 7:34–35). Petitioner contends that “[o]rienting the magnetization as
taught by Goldberg is further motivated by Dormer’s explanation for
achieving a single predetermined alignment.” Id. at 41–42 (citing Ex. 1002
¶¶ 83–84; Ex. 1003, 7:1–5; Ex. 1004, Fig. 5).
Patent Owner makes several arguments against the combination of
Dormer and Goldberg. Patent Owner argues that Petitioner’s proposed
change in Dormer’s axial design to diametric magnetization across the
diameter of its ring magnet “is flawed for at least four reasons.” PO Resp.
34. First, Patent Owner contends that “there were no benefits to making”
Petitioner’s proposed change and Petitioner fails to identify a reason for its
proposed modification. Id. at 34–35. The premise for this argument rests on
Patent Owner’s position that Petitioner must first articulate a motivation for
choosing Dormer’s ring magnet embodiment over its other embodiments
prior to the modification of the axial design. Id. at 35 (citing Ex. 2014 ¶¶ 96,
102, 131). As to Petitioner’s argument that preserving a “single
predetermined alignment” between the magnets provides a motivation for
the combination, Patent Owner argues that Dormer already provides a
solution to that problem and Petitioner never identifies any deficiencies in
IPR2020-00176
Patent 6,761,681 B2

23
Dormer’s solution. Id. at 35–38 (citing Ex. 1003, 5:8–44, 6:9–16, 6:19–28,
6:51–53, 7:5–15; Ex. 2014 ¶¶ 97–102; Ex. 2016, 21:8–22:6, 31:2–8, 57:9–
17, 60:18–61:15, 62:9–63:1, 79:25–80:5, 82:12–18, 119:10–14).
Second, Patent Owner contends that “there were significant
drawbacks to making the change.” PO Resp. 34. Patent Owner contends
that these drawbacks include (1) increasing the size of Dormer’s implant;
(2) reducing “the attractive force between the internal and external
magnets;” (3) increasing the size of the magnets and components to account
for the decrease in attraction; and (4) requiring substantial redesign of
Dormer necessary to accomplish Dormer’s goal of “maximum signal
transference.” Id. at 39–45 (citing Ex. 2014 ¶¶ 103–129).
Third, Patent Owner argues that Petitioner’s “‘design choice’
argument is based on an over-simplification” that Petitioner’s declarant
admits is inaccurate. PO Resp. 34. Patent Owner contends that Petitioner
improperly assumes that its design choice argument replaces the need to
show a motivation to modify Dormer, and improperly interprets the
Moskowitz as disclosing three main magnetization options, when it in fact
discloses 31 “two-pole magnetization arrangements.” Id. at 46–47 (citing
Ex. 1010, 22; Ex. 2014 ¶¶ 130–131). If multipole arrangements are
included, according to Patent Owner the number of possibilities are
“virtually infinite.” Id. at 47 (citing Ex. 1010, 21; Ex. 2014 ¶¶ 132, 134).
Patent Owner also argues that Petitioner’s selection of diametric
magnetization from among the possible options makes little sense given the
drawbacks of that design. Id. at 48–49 (citing Ex. 2014 ¶¶ 136–137).
Fourth, Patent Owner contends that “the length of co-existence of
Dormer and Goldberg, and [Petitioner’s] own pre-petition statements,
IPR2020-00176
Patent 6,761,681 B2

24
contradict [Petitioner’s] arguments.” PO Resp. 34. According to Patent
Owner, the objective evidence, such as the length of time that passed
between the publication of Goldberg (1973) and Dormer (1982) before the
’681 patent application was filed, suggests Petitioner’s approach suffers
from hindsight and undermines its argument that modifying Dormer
involves a simple design choice. Id. at 49–50 (citing Ex. 2014 ¶¶ 138–139).
Separately, even assuming a motivation to combine Dormer and
Goldberg, Patent Owner contends that a POSA would have no reasonable
expectation of success when modifying Dormer as Petitioner proposes. PO
Resp. 50–52. According to Patent Owner, Goldberg’s use of the magnets as
a wrench focuses on rotation rather than mere retention of a cochlear
implant, and rotation of Dormer’s implanted magnet “would create trauma.”
Id. at 51 (citing 2014 ¶ 140; Ex. 2016, 99:13-100:19). Patent Owner also
argues that Moskowitz’s teachings relate to dental prosthetics that use
additional means to retain the prosthetic device, and prior art showing poles
parallel to the skin still used axial magnets. Id. at 51–52 (citing Ex. 2014
¶¶ 141–143).
Patent Owner raises additional arguments in support of its position
that a POSITA “would not have been motivated to consider either of
Goldberg’s embodiments.” PO Resp. 52–53 (citing Ex. 2014 ¶ 144). First,
Patent Owner argues that Petitioner employs an improper “short-cut” when
presuming that those in the field would have knowledge of Dormer and
Goldberg. Id. at 53–54. According to Patent Owner, Petitioner defines the
relevant technical fields too broadly and Petitioner’s own non-analogous art
arguments during prosecution of its patents undermine its position. Id. at
54–55 (citing Ex. 2014 ¶¶ 145, 147). Second, Patent Owner argues that a
IPR2020-00176
Patent 6,761,681 B2

25
POSITA seeking to modify Dormer would not have looked to Goldberg
because neither of Goldberg’s two embodiments “are reasonably pertinent to
the problems” addressed by the ’681 patent. Id. at 55 (citing Ex. 2014
¶ 148). In support of its position, Patent Owner argues that (1) Goldberg’s
magnets are used for different purposes than Dormer’s magnets, and Patent
Owner distinguished prior art on the same basis during prosecution of its
own patents; (2) Goldberg’s first embodiment employs a fundamentally
different design than Dormer, with magnets of significantly different size;
(3) Goldberg’s second embodiment employs a different design that does not
use an external magnet; and (4) Petitioner’s own statements suggest that it
did not consider Goldberg relevant because Petitioner touted its diametric
magnet as unique in implantable devices. Id. at 55–58 (citing Ex. 2014
¶¶ 148–153).
In its Reply, Petitioner argues that Goldberg’s diametric ring magnets
fulfill the requirements of Dormer. Pet. Reply 12. In support of its position,
Petitioner notes Dormer’s reliance “on placing attractive poles near each
other ‘so that the magnetic lines of force extend through the intervening
tissue’ to retain the assemblies in alignment,” and Goldberg’s similar
arrangement in its Figure 5. Id. (citing Ex. 1003, 5:28–32; Ex. 1004, 4:63–
66). Petitioner also argues that Dormer’s ring magnet embodiment provides
the starting point for the analysis, and that Patent Owner improperly argues
that Petitioner must show that it would have been obvious to go from
Dormer’s “magnetic slug configuration [in its other embodiments] to a ring
magnet.” Id. at 13–14 (citing Ex. 1002 ¶ 82). As to Patent Owner’s
argument that Dormer seeks to maximize magnetic attraction, Petitioner
argues that Dormer instead seeks to secure the external and internal units
IPR2020-00176
Patent 6,761,681 B2

26
and “axial magnetization has not been shown to be stronger than diametric
magnetization.” Id. at 14 (citing Ex. 1018 ¶¶ 9–13). According to
Petitioner, “[t]he obviousness inquiry has nothing to do with which
magnetization method is stronger,” and Petitioner asserts that Patent
Owner’s declarant lacks the requisite expertise in magnetics and makes
fundamental errors in his analysis of which type of magnetization requires a
larger magnet. Id. at 14–17 (citing Ex. 1002 ¶¶ 36, 41, 73, 83; Ex. 1018
¶¶ 3, 6–13, 19–20). As to the difficulty in modifying Dormer, Petitioner
argues that any design, whether axially magnetized or a diametrically
magnetized ring magnet, must account for the coils and involves a standard
design task in this art, and Dormer leaves the engineering details of its ring
embodiment out just as in the ’681 patent. Id. at 18 (citing Ex. 1018 ¶ 16).
As to the number of magnetization options available based on the
Moskowitz handbook, Petitioner argues that as a practical matter two to
three options exist and Patent Owner’s reference to additional options
includes a number of impractical options. Id. at 18–19. Petitioner also
argues that parallel magnetization was known and would be expected to hold
the magnets together, and that Petitioner’s statements in unrelated patent
applications do not involve the same issues presented here. Id. at 20–22.
In its Sur-reply, Patent Owner argues that Petitioner must provide a
reason to start with Dormer’s ring magnet embodiment and then modify it,
and Dormer merely describes the ring magnet as feasible, which does not
establish motivation to select the embodiment over the other embodiments.
PO Sur-reply 4–5. Patent Owner also argues that Petitioner improperly
minimizes downsides of a ring magnet or diametric magnetization, and fails
to explain why one would depart of the “universally used axially magnetized
IPR2020-00176
Patent 6,761,681 B2

27
holding magnet.” Id. at 6–9. Patent Owner further contends that Petitioner
fails to cite any benefit of diametric magnetization compared to axial
magnetization, and that the costs of that change outweigh any benefits. Id.
at 10–12. Patent Owner also reiterates its arguments that one looking to
modify Dormer would not look to Goldberg and that its declarant’s analysis
provides support for its argument that modifying Dormer to include
diametric magnetization imposes negative drawbacks. Id. at 13–16.
2) Discussion
Based on our review of the parties’ arguments and evidence, we are
persuaded that Petitioner establishes sufficiently that one of ordinary skill in
the art would have been motivated to apply diametric magnetization to
Dormer’s ring magnet, resulting in the poles extending parallel to the skin.
See Pet. 35–43; Pet. Reply 12–20. As an initial matter, we agree with
Petitioner that Dormer discloses a ring magnet embodiment and that
embodiment provides a proper starting point for its analysis without any
requirement that Petitioner first establish a motivation to choose that
embodiment over Dormer’s other embodiments. See Pet. 13–14; Ex. 1003,
7:30–36. Patent Owner argues that Petitioner “must” articulate a motivation
to choose Dormer’s ring magnet embodiment over its other embodiments,
but provides no support for such a requirement. PO Resp. 35. Instead, the
cases cited by Patent Owner merely address selecting particular references
among multiple references, not picking among multiple embodiments within
a reference. See id. (“WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1337 (Fed.
Cir. 2016) (‘Whether a skilled artisan would be motivated to make a
combination includes whether he would select particular references in order
to combine their elements.’)”); id. at 36 (“But ‘obviousness concerns
IPR2020-00176
Patent 6,761,681 B2

28
whether a skilled artisan not only could have made but would have been
motivated to make the combinations or modifications of prior art to arrive at
the claimed invention.’ Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073
(Fed. Cir. 2015).”); see also PO Sur-reply 4 (citing Shire LLC v. Amneal
Pharm., LLC, 802 F.3d 1301, 1308 (Fed. Cir. 2015)9).
We also agree with Petitioner that both Dormer and Goldberg are in
the same field that includes “transcutaneous connecting devices, magnetic
devices and/or implantable devices.” Pet. 35. Patent Owner argues that
Petitioner defines the field too broadly by potentially including any kind of
medical device, motor, or electronic device, but does not propose its own
definition of the field of invention that would not encompass Goldberg. PO
Resp. 54. In addition, even if we removed the breadth of Patent Owner’s
broadest possible literal reading from Petitioner’s proposal, such that the
field was limited to magnetized medical implanted devices, both Dormer and
Goldberg still fall within that field. See id. Patent Owner’s reliance on
Petitioner’s statements in the prosecution of Petitioner’s patent applications
does not persuade us that Dormer and Goldberg are not in the same field
here, as Patent Owner does not explain adequately the claim limitations and

9 Patent Owner first cites Shire in its Sur-reply, depriving Petitioner of a
chance to respond. Paper 14, 8 (emphasizing that “any arguments not raised
in the response may be deemed waived”). In addition, the claims at issue in
Shire were directed to methods of using amphetamine derivatives, including
use of a mesylate salt of L-lysine-d-amphetamine. Shire, 802 F.3d at 1304.
Patent Owner provides no argument or analysis of Shire, or any persuasive
reasoning suggesting that the obviousness analysis in the chemical or drug
arts, which may involve identification of a motivation to pick a “starting
compound” and other issues specific to that art, should be applied in the
same way in this case involving magnets in the mechanical art. See id. at
1306–08.
IPR2020-00176
Patent 6,761,681 B2

29
prior art at issue in those proceedings and how those statements somehow
bind Petitioner here in the context of different claim limitations and prior art.
See id. at 54–56.
As to the reasons for the combination, Petitioner persuasively
articulates its reasoning, supported by credible expert testimony, that
(1) Dormer’s cochlear implant includes magnets placed with attractive poles
near each other so that the magnetic force extends through the intervening
skin tissue; (2) Dormer teaches the benefit of a single, predetermined
alignment between the internal and external magnets; (3) Dormer discloses a
ring magnet but leaves out details such as how to magnetize the ring magnet;
(4) Goldberg discloses a pair of ring magnets with diametric magnetization,
and applying diametric magnetization to Dormer’s ring magnet results in the
benefit of maintaining a single, predetermined alignment; (5) Moskowitz
discloses a finite number of practical magnetization options for use in
Dormer’s device, further supporting the use of diametric magnetization as
one of the most basic options available; and (6) applying diametric
magnetization to Dormer’s ring magnet involves a predictable use of known
methods to yield predictable results, with routine design considerations
necessary to implement the ring magnet. Pet. 35–42; Pet. Reply 12–14, 18–
20; Ex. 1002 ¶¶ 38, 40–41, 76–84; Ex. 1003, 5:21–44, 7:1–29, 7:34–35; Ex.
1004, 2:64–66, 4:63–66, Fig. 5; Ex. 1010, 22, 155; Ex. 1018 ¶¶ 16, 19.
Patent Owner raises a number of additional arguments that we do not
find persuasive. For example, Patent Owner argues that there could be no
motivation to provide a magnet with a single, predetermined orientation
when Dormer’s existing non-ring magnet embodiments already provide that
benefit. See PO Resp. 35; see also id. at 39–41 (arguing that using the ring
IPR2020-00176
Patent 6,761,681 B2

30
magnet over non-ring magnets “undesirably increases the size of Dormer’s
implant”). We disagree. Patent Owner’s argument appears to be an
extension of its argument that Petitioner must provide a motivation as to
why it relies on Dormer’s ring magnet embodiment instead Dormer’s non-
ring magnet embodiments, which we rejected above. See id. Moreover,
Petitioner does not seek to modify Dormer’s non-ring magnet embodiments;
it merely seeks to fill in the missing magnetization orientation of the ring
magnet embodiment using the diametric magnetization Goldberg discloses
for the reasons provided. See Pet. 24; Pet. Reply 13–14, 21. Dormer’s
disclosure of the benefit of providing a single, predetermined magnet
orientation in a non-ring magnet embodiment supports Petitioner’s proposed
combination rather than undermines it because the addition of diametric
magnetization to Dormer’s ring magnet retains that benefit.
Patent Owner also argues that “changing the magnetization from axial
to diametric undesirably reduces the attractive force between the internal and
external magnets,” but that argument again misstates Petitioner’s proposal
by assuming that the combination requires “changing” from one
magnetization orientation to another, when Dormer’s ring magnet does not
disclose any magnetization orientation. See PO Resp. 41. To the extent that
Patent Owner suggests that one of ordinary skill in the art would not choose
to use Goldberg’s diametric magnetization because Dormer’s other
embodiments use axial magnetization, we disagree. Dormer does not tout
the advantages of “axial” magnetization by name and certainly does not
teach away from diametric magnetization. The parties dispute, via
competing expert testimony, whether axial or diametric magnetization
provides stronger attractive force and whether diametric magnetization
IPR2020-00176
Patent 6,761,681 B2

31
would require a larger magnet to overcome any decrease in force. See, e.g.,
id. at 41–44; Pet. Reply 14–17. We need not resolve that dispute because
Patent Owner’s briefing does not establish that any alleged decrease in
magnetic force impacts the holding force of the magnets in a significant
enough manner to require any changes. See PO Resp. 41–44. For example,
if the diametrically magnetized ring magnet still provides more than enough
force to retain Dormer’s cochlear implant in place even if the force drops
somewhat, no change in magnet size may be necessary. Similarly, if only a
very slight increase in magnet size is required, that change may not
meaningfully counsel against the use of diametric magnetization. Without
some sense of the scale of the change in magnet strength relative to the force
required to provide a functional device, and a sense of the scale of the
change in magnet size allegedly required to accommodate the use of
diametric magnetization, Patent Owner’s arguments on this point lack
sufficient weight to undermine Petitioner’s showing.10
Patent Owner also argues that Moskowitz fails to provide a finite
number of magnetization options. See e.g., PO Resp. 46–48. We view

10 Patent Owner argues that Petitioner’s own patent states that diametric
magnetization requires 20–30% more magnet volume than an axially
magnetized magnet. See PO Resp. 43–44 (citing Ex. 2014 ¶¶ 121–122; Ex.
2023, 3:21–23, 4:4–10; Fig. 3). Even if true, however, that general
statement does not address Dormer or Petitioner’s proposed combination,
which includes Dormer’s ring magnet with a larger circumference and
diameter compared to Dormer’s other, smaller magnets. See Pet. Reply 17;
Pet. 27 (depicting ring magnet in proposed combination); Ex. 1003, Figs. 2,
5 (depicting non-ring magnet embodiments with smaller diameters). The
increased size of Dormer’s ring magnet may already include additional
volume compared to Dormer’s axial magnets and no additional increase in
size may be necessary, as Patent Owner alleges, when incorporating
diametric magnetization.
IPR2020-00176
Patent 6,761,681 B2

32
Petitioner’s arguments based on Dormer and Goldberg as sufficient to
provide a motivation to add diametric magnetization to Dormer’s ring
magnet without relying on Moskowitz. Nevertheless, we also agree with
Petitioner’s position that Moskowitz discloses a finite number of practical
magnetization options, including diametric magnetization, which supports
the use of diametric magnetization for Dormer’s ring magnet. See Pet. 36–
37; Pet. Reply 18–19; Ex. 1002 ¶¶ 76–77; Ex. 1010, 22. Moskowitz shows
twelve different “[s]tandard magnetizing methods” for ring magnets,
including axial and diametric magnetization shown as the first two options.
See Ex. 1010, 22. While we find Petitioner’s argument that the axial and
diametric options are the most practical here persuasive, even twelve options
represent a “finite” number of options in a mechanical art such as magnets,
and supports Petitioner’s position that choosing one of the options
Moskowitz describes as “[s]tandard” in the art as of 1976 supports its
obviousness argument. See Pet. Reply 18–19; Ex. 1002 ¶ 76.
We find Patent Owner’s additional arguments as to Goldberg
unavailing. PO Resp. 50–55. Patent Owner contends that Goldberg’s use of
its magnets for rotation would not be expected to work in Dormer where
rotation would create trauma, but Petitioner does not rely on Goldberg for
rotation or propose adding rotatable magnets to Dormer. See PO Resp. 50–
51, 55–56. Petitioner only relies on the diametric magnetization of
Goldberg’s magnets, as shown in Goldberg’s Figure 5. See Pet. 26–27; Pet.
Reply 21; Ex. 1002 ¶ 67. Further, Patent Owner does not explain adequately
how the force required to keep two magnets together through rotation in
Goldberg would fail to merely keep the magnets in place and aligned as in
Dormer’s cochlear implant. See PO Resp. 50–51, 55–56.
IPR2020-00176
Patent 6,761,681 B2

33
We have considered Patent Owner’s remaining arguments, but they do
not persuade us that Petitioner fails to make an adequate showing as to its
proposed combination. For example, we do not view Petitioner’s proposed
combination as based on hindsight due to the longtime availability of both
Dormer (since 1982) and Goldberg (since 1976) in the art. See PO Resp.
49–50. As discussed above, Petitioner articulates reasoning based on the
references themselves, rather than hindsight, for the proposed addition of
diametric magnetization to Dormer’s ring magnet. We also do not view
Petitioner’s proposed combination as “modifying the magnetization
orientation” in a way that “would require a substantial redesign of Dormer’s
device” as Patent Owner contends. See id. at 44–50. Petitioner’s proposal
does not modify an existing magnetization orientation of its ring magnet
embodiment—Dormer discloses no magnetization orientation for that
embodiment. See Ex. 1003, 7:35–36. Petitioner also persuasively argues,
with support from credible declarant testimony, that placing a ring magnet
around a coil as Petitioner proposes does not introduce problems and
addressing any implementation issues involves a standard design task. See
Pet. Reply 18; Ex. 1018 ¶ 16.
Based on the foregoing, we find that Petitioner has proven by a
preponderance of the evidence that one of ordinary skill in the art would
have been motivated to combine Dormer with Goldberg’s teachings of
diametric magnetization in the manner Petitioner proposes for the reasons
provided by Petitioner.

IPR2020-00176
Patent 6,761,681 B2

34
c. Objective Indicia of Nonobviousness
1) The Parties’ Positions
Patent Owner argues that objective indicia illustrate the
nonobviousness of the challenged claims, including industry praise,
commercial success, and proceeding contrary to accepted wisdom. PO
Resp. 63–69. As to industry praise, Patent Owner relies on laudatory
statements by Petitioner and others when referencing Petitioner’s
commercial product. Id. at 65 (citing Ex. 2014 ¶¶ 168–172). Patent Owner
argues that the laudatory statements tout the use of diametric magnets as
having a positive impact on patient care and “cutting-edge.” Id. at 65–66
(citing Ex. 2017, 4; Ex. 2027; Ex. 2028, 12, 14). Patent Owner also alleges
that Petitioner described its device as “revolutionary” and “really adds to the
safety.” Id. at 66 (citing Ex. 2004, 1, 4; Ex. 2005, 3).
As to commercial success, Patent Owner argues that Petitioner’s
SYNCHRONY cochlear implant enjoys commercial success and that
Petitioner touts the “parallel-to-the-skin magnetization” first disclosed in the
’681 patent as the reason for the success. PO Resp. 66–67 (citing Ex. 2014
¶¶ 173–175; Ex. 2033, 70). Patent Owner also argues that the prominence of
diametric magnetization in Petitioner’s advertising material links the success
to the claimed invention and establishes a nexus. Id. at 67–68 (citing Ex.
2005, 1, 3; Ex. 2029, 2; Ex. 2030, 4; Ex. 2031, 5).
As to proceeding against conventional wisdom, Patent Owner argues
that prior to the ’681 patent, magnets used in the claimed passage-free
connections employed axial magnetization in all commercial products. PO
Resp. 68–69 (citing Ex. 2005, 1; Ex. 2014 ¶¶ 176–177; Ex. 2019). Patent
Owner also argues that “the universal use of axial magnets is found in all
IPR2020-00176
Patent 6,761,681 B2

35
prior art.” Id. at 69 (citing Ex. 1003, 5:27–32; Ex. 1009, 2:26–31; Ex. 2001,
Fig. 3; Ex. 2018, Fig. 1).
Petitioner argues that its commercial product and its success “is
irrelevant to the ’681 patent.” Pet. Reply 3. According to Petitioner, the
’681 patent appears to be a commercial failure, was never commercialized,
and the lack of any commercial products on the market employing anything
other than axial magnets from 2001 (when the ’681 patent issued) to 2015
confirms the lack of commercial success. Id. at 3–4. Petitioner contends
that the revolutionary success of its product is due to the fact that it was the
first FDA-approved cochlear implant for use in “a 3.0 Tesla MRI.” Id. at 4–
5 (citing Ex. 2003, 1:57-60; Ex. 2004, 1; Ex. 2005, 2). Petitioner portrays
the ability of the magnet in its SYNCHRONY product to freely rotate to
neutralize magnetic forces as the key to its success. Id. at 5 (citing Ex. 2005,
2). Petitioner further argues that Patent Owner crops quotes from the
literature in an effort to suppress the importance of the rotatability in Patent
Owner’s products, which undermines Patent Owner’s industry praise and
commercial success arguments. Id. at 5–6 (citing Ex. 2020, 3). Petitioner
contends that the elongated magnet in a fixed position the ’681 patent
discloses would not provide the rotatability necessary to achieve success. Id.
at 6–7 (citing Ex. 1017, 72:18–73:7, 87:19–23, 97:24–98:9).
As to nexus, Petitioner argues that Patent Owner fails “to identify
which, if any, claims correspond” to the SYNCHRONY product and
contends that none of the claims read on the product. Pet. Reply 8 (citing
Ex. 1017, 91:13–15). Petitioner also argues that Patent Owner fails to
establish that any claims are coextensive with Petitioner’s product, and that
the rotatability that drives the success of Petitioner’s product “is nowhere
IPR2020-00176
Patent 6,761,681 B2

36
contemplated or suggested by the ’681 patent disclosure of an elongated
behind-the-ear magnet.” Id. at 8–9.
As to departing from accepted wisdom, Petitioner argues that the
conventional wisdom was to use magnets to retain the external part of a
cochlear implant as Dormer teaches, and that magnetic orientation “was of
no consequence.” Pet. Reply 10. According to Petitioner, Moskowitz shows
diametric magnetization and other art discloses parallel-to-the-skin
magnetization in a cochlear implant. Id. (citing Ex. 1002 ¶ 38; Ex. 1010, 81,
Fig. 9-21; Ex. 1013; Ex. 1018 ¶¶ 12, 17). Petitioner contends that although
the approach of “the ’681 patent may have diverted from a popular
commercial practice, it did not achieve any notable advantages and as far as
we know it was not commercialized.” Id.
In its Sur-reply, Patent Owner argues that Petitioner concedes that the
conventional wisdom for commercial products was to employ axial magnets,
and the ’681 patent diverted from that practice. PO Sur-reply 17. Patent
Owner also argues that magnetic orientation was not “of no consequence” as
Petitioner alleges, and if so, one would expect cochlear implants employing
diametric magnetizations, which did not occur prior to the ’681 patent. Id. at
18 (citing Ex. 2005, 1; Ex. 2014 ¶¶ 47, 176–177; Ex. 2019). As to
commercial success and industry praise, Patent Owner argues that Petitioner
attributes at least part of its success to the parallel-to-the-skin magnetic
orientation. Id. at 19 (citing Ex. 2004, 4; Ex. 2005, 3; Ex. 2020, 3; Ex. 2029,
2; Ex. 2030, 4). As to nexus, Patent Owner argues that Petitioner and others
“credited both the magnetization and the rotatability of the magnet, with the
magnetization commonly identified first and foremost.” Id. at 20 (citing Ex.
2004; Ex. 2020, 3). Patent Owner contends that even if MRI compatibility
IPR2020-00176
Patent 6,761,681 B2

37
is the primary driver of SYNCHRONY’s success, the parallel-to-the-skin
magnetization ‘is one of the enabling links [] to achieve compatibility with
MRI.’” Id. at 21 (quoting Ex. 1017, 97:24–98:9).
2) Discussion
We first address the nexus between the claimed invention and Patent
Owner’s objective indicia of nonobviousness and then the strength of Patent
Owner’s objective indicia evidence.
Patent Owner bears the burden of establishing a nexus. See Fox
Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019). “[A]
patentee is entitled to a rebuttable presumption of nexus between the
asserted evidence of secondary considerations and a patent claim if the
patentee shows that the asserted evidence is tied to a specific product and
that the product ‘is the invention disclosed and claimed.’” Id. (quoting
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392
(Fed. Cir. 1988)).
Patent Owner fails to meet its burden of establishing a nexus. As an
initial matter, Patent Owner does not purport to seek a presumption of a
nexus because Patent Owner provides no analysis of the challenged claims
with respect to Petitioner’s product at all, much less an analysis purporting
to establish that the product is coextensive with the claims. See PO Resp.
63–69. In addition, although nexus can be established absent a presumption,
Patent Owner’s failure to map the claim limitations on to Petitioner’s
product, and Petitioner’s undisputed assertion that the challenged claims do
not cover its product, undermine any assertion of a nexus. See Pet. Reply 8.
Further, Petitioner persuasively argues that unclaimed features in its product,
including the rotatability of its magnet enabling use of its product within an
IPR2020-00176
Patent 6,761,681 B2

38
MRI, drive the industry praise and commercial success of the product. See
Pet. Reply 5–7; Ex. 2004, 1; Ex. 2005, 2; Ex. 2020, 3. Although Patent
Owner contends that diametric magnetization may partially enable the
compatibility with MRI, the evidence does not explain how this is the case
or undermine Petitioner’s position that the praise and success are largely due
to unclaimed aspects of Petitioner’s product. See PO Sur-reply 21 (citing
Ex. 2004, 2–4) (quoting Ex. 1017, 97:24–98:9). Under these circumstances,
where Patent Owner provides no analysis of the product with respect to the
challenged claims and the product literature merely touts one limitation in
the challenged claims as significant while other unclaimed product features
are critical to the success of the product, we find that Patent Owner has not
established a nexus to the claimed invention.
For the sake of completeness, we briefly address Patent Owner’s
allegations relating to objective indicia based on the assumption that Patent
Owner established a nexus. As to industry praise and commercial success,
we find the evidence relatively weak for the same reasons we find that
Patent Owner fails to establish a nexus, i.e., Petitioner persuasively argues
that the praise and success were largely due to unclaimed product features.
While diametric magnetization may play some undefined role in the success
of the product and its use in MRI machines, the record does not indicate its
importance approaches that of the rotatable magnet, which the claims do not
require and the ’681 patent does not discuss. As a result, we find the
evidence of industry praise and commercial success relatively weak.
As to proceeding against conventional wisdom, Patent Owner
persuasively argues that commercial products employed axial magnets prior
to the ’681 patent, but Patent Owner incorrectly argues that “all prior art”
IPR2020-00176
Patent 6,761,681 B2

39
also employed axial magnets. See PO Resp. 68–69. Moskowitz, for
example, describes diametric magnetization as one of the “[s]tandard
magnetizing methods” for use in medical implants as of 1976. Ex. 1010, 22.
Nevertheless, due to the lack of cochlear implant art employing diametric
magnetization prior to the ’681 patent, we find a moderate level of evidence
supporting Patent Owner’s argument that the ’681 patent proceeding against
conventional wisdom.
Based on the foregoing, we find that Patent Owner fails to establish a
nexus and therefore fails to establish that the objective indicia support a
finding of nonobviousness. Even if Patent Owner established a nexus, the
objective evidence is relatively weak to moderate and would not weigh
heavily in favor of nonobviousness as Patent Owner contends.
d. Conclusion as to Claims 6–9 and 11
“Once all relevant facts are found, the ultimate legal determination [of
obviousness] involves the weighing of the fact findings to conclude whether
the claimed combination would have been obvious to an ordinary artisan.”
Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1361
(Fed. Cir. 2017). Above, based on the full record before us, we provide our
factual findings regarding (1) the level of ordinary skill in the art, (2) the
scope and content of the prior art, (3) any differences between the claimed
subject matter and the prior art; and (4) objective indicia of nonobviousness.
In particular, we find that (1) Petitioner’s proposed level of ordinary
skill in the art is consistent with the art of record; (2) the combination of
Dormer and Goldberg discloses all the limitations of claims 6–9 and 11;
(3) one of ordinary skill in the art would have been motivated to combine
Dormer and Goldberg in the manner Petitioner proposes; and (4) Patent
IPR2020-00176
Patent 6,761,681 B2

40
Owner fails to establish a nexus, and even assuming a nexus, the objective
evidence is relatively weak to moderate. Weighing these underlying factual
determinations, a preponderance of the evidence persuades us that claims 6–
9 and 11 of the ’681 patent are unpatentable over the combination of Dormer
and Goldberg.
E. Obviousness of Claim 12 Based on Dormer, Goldberg, and Ely
Petitioner challenges claim 12 under 35 U.S.C. § 103 based on
Dormer, Goldberg, and Ely. Pet. 43–50. For these challenges, Petitioner
cites to the asserted references and the Trumper Declaration. Id.
Ely discloses a hearing aid with a directional microphone system.
Ex. 1006, code (57). Ely’s microphone system 14 includes a “front-to-back
sound conduit 21” defined by microphone casing 24. Id. at 3:12–16, Fig. 1.
Petitioner asserts that the Dormer/Goldberg combination discloses all
of the limitations of claim 12 with the exception of the final limitation
requiring “at least one conduit extending through the external part.” Pet.
43–47. As to the conduit limitation, Petitioner relies on Ely’s disclosure of a
conduit extending through its hearing aid. Id. at 47 (citing Ex. 1006, 3:13–
16, 5:14–15). Petitioner also argues that one of ordinary skill in the art
would have reasons to combine Ely with the Dormer/Goldberg combination.
Id. at 48–50 (citing Ex. 1002 ¶¶ 87–89; Ex. 1006, 1:45–47, 2:30–31, 3:12–
16). Patent Owner does not address or dispute Petitioner’s arguments and
evidence as to claim 12 and Ely, except to argue that reliance on Ely does
not cure any of the alleged deficiencies in Petitioner’s challenge based on
Dormer and Goldberg. PO Resp. 58.
Based on the foregoing, we find that (1) Petitioner’s proposed level of
ordinary skill in the art is consistent with the art of record; (2) the
IPR2020-00176
Patent 6,761,681 B2

41
combination of Dormer, Goldberg, and Ely discloses all the limitations of
claim 12; (3) one of ordinary skill in the art would have been motivated to
combine Dormer, Goldberg, and Ely in the manner Petitioner proposes; and
(4) Patent Owner fails to establish a nexus, and even assuming a nexus, the
objective evidence is relatively weak to moderate. Weighing these
underlying factual determinations, a preponderance of the evidence
persuades us that claim 12 of the ’681 patent is unpatentable over the
combination of Dormer, Goldberg, and Ely.
F. Anticipation of Claim 9 Based on Hooven
Petitioner challenges claim 9 under 35 U.S.C. § 102(b) based on
Hooven. Pet. 8, 50–53. For these challenges, Petitioner cites to the asserted
references and the Trumper Declaration. Id. at 50–53.
We need not reach Petitioner’s additional challenge to claim 9 based
on Hooven because we already found that Petitioner establishes that claim 9
would have been obvious based on Dormer and Goldberg.
G. Petitioner’s Motion to Exclude
Petitioner moves to exclude Exhibits 2017, 2019, 2020, 2025, 2027–
2031 and 2033. Paper 30, 1. Although we may have explicitly or implicitly
referenced these exhibits when recounting or addressing the parties’
arguments, we do not rely on any of the exhibits as a basis to make any
findings adverse to Petitioner in this Decision. For example, we considered
several of the exhibits as part of Patent Owner’s objective indicia arguments,
and found the arguments lacking even with those exhibits in evidence. We,
therefore, dismiss Petitioner’s Motion to Exclude as moot.

IPR2020-00176
Patent 6,761,681 B2

42
CONCLUSION11
A summary of our conclusions appears in the chart below:
Claim(s)
35
U.S.C.
§
Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
6–9, 11 103(a) Dormer, Goldberg 6–9, 11
12 103(a) Dormer, Goldberg, Ely
12
912 102(b) Hooven
Overall
Outcome
6–9, 11, 12

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that claims 6–9, 11, and 12 of U.S. Patent No. 6,761,681
B2 have been shown, by a preponderance of the evidence, to be
unpatentable;
FURTHER ORDERED that Petitioner’s Motion to Exclude is
dismissed; and

11 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
12 Because we already determined that all of the challenged claims are
unpatentable, we did not reach whether claim 9 is also unpatentable based on
Hooven.
IPR2020-00176
Patent 6,761,681 B2

43
FURTHER ORDERED that, because this is a Final Written Decision,
the parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

IPR2020-00176
Patent 6,761,681 B2

44
FOR PETITIONER:
Robert M. Asher
Kathryn E. Noll
SUNSTEIN KANN MURPHY AND TIMBERS LLP
rasher@sunsteinlaw.com
knoll@sunsteinlaw.com

FOR PATENT OWNER:
Marcus E. Sernel
Hari Santhanam
Daniel R. Shearer
Joel Merkin
KIRKLAND & ELLIS LLP
marc.sernel@kirkland.com
hari.santhanam@kirkland.com
daniel.shearer@kirkland.com
jmerkin@kirkland.com

Gregory Rosenthal
SONOVA AG
gregory.rosenthal@sonova.com